Argentum Pharm. LLC v. Alcon Research, Ltd., Case IPR2017-01053 (January 19, 2018) (Paper No. 27)

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Takeaway (1):

A party moving to file exhibits under seal bears the burden of showing “good cause” for the relief requested. A failure to show good cause will result in the exhibits at issue being expunged from the record and any argument or evidence in a substantive brief that relies on that expunged exhibit shall be accorded no weight.

Takeaway (2):

Prior to filing a motion to seal, counsel is required to confer or attempt to confer in good faith with the opposing party in an effort to come to an agreement as to the scope of the proposed protective order. Sending a letter to opposing counsel on the same day the motion is filed and stating that no response was received prior to the filing of the motion does not constitute a good faith effort to confer.

Takeaway (3):

A party who successfully files information under seal assumes the risk that its confidential information will become public if that information is relied upon in a final written decision.

Summary (Informative)

Alcon Research, LTD. (“Patent Owner”) filed a Motion to Seal numerous exhibits and for Entry of Proposed Protective Order. On the day the motion was filed, Patent Owner wrote to Petitioner’s counsel regarding “consent to the entry of the proposed protective order, but did not receive a response before filing [the] motion.”

In an inter partes review, the moving party bears the burden of showing that the relief requested should be granted. A party moving to seal must show “good cause” for the relief requested. The good cause standard for sealing documents reflects the strong public policy for making all information in an inter partes review open to the public. To establish good cause to seal, the movant must demonstrate that:

  1. The information sought to be sealed is truly confidential;
  2. A concrete harm would result upon public disclosure;
  3. There exists a genuine need to rely in the trial on the specific information sought to be sealed; and
  4. On balance, an interest in maintaining confidentiality outweighs the strong public interest in have an open record.

IPR1053, citing 37 C.F.R. § 42.54(a); IPR440, Paper 47, 2-3 and Paper 49, 2.

The Board denied Patent Owner’s Motion, stating that the Motion “lacks explanation of how these exhibits relate to any disputed issue of fact, much less why they are necessary to a specific position taken by a party.” The Board further stated that “the Motion stops short of stating that public disclosure of [the exhibits] will result in any concrete injury.” The Board then permitted Patent Owner to either file a second Motion to Seal that meets the good cause standard, or file a motion to unseal.  In the event the second motion is unsuccessful or a motion to unseal is not timely filed, the exhibits will be expunged and any argument relying thereon shall be accorded no weight.  Finally, the Board cautioned the parties that to the extent a final written decision relies on confidential information that information will be made public.

Cristofer Leffler

Cristofer Leffler

Cris helps technology clients resolve high stakes intellectual property, commercial, and antitrust disputes. With significant in-house and private practice experience, he also counsels clients in complex commercial and ip transactions.